NAF ruling escapes UK court scrutiny

What was to been the first challenge a domain name arbitration ruling by ICANN in the UK courts has ended up in an out of court settlement.

Back in July UK domain name registry Internetters issued High Court proceedings to prevent the transfer of a domain name, domainregistry.biz, to US firm DomainRegistry.com Inc.

Internetters acted after what it claimed was a flawed decision by a one-member panel of the ICANN-appointed National Arbitration Forum (NAF) to strip it of the disputed domain.

Paul Westley, co-founder of Internetters, explains: "We registered 'domainregistry.biz' when the new .biz domains became available as we thought it was descriptive of the services we offer and a strong generic name for use on the Internet. We had no idea that a small US company would challenge this on the basis of a trademark which it has not yet registered."

NAF's decision was heavily affected by DomainRegistry.com's application to trademark the term domain registry despite the fact this was such a generic term for many similar businesses. Also its previous attempts to trademark the term had been turned down by the US Patent and Trademark Office.

Another point of contention was DomainRegistry.com alleged refusal to abide by the conditions of the STOP (.biz registry Neulevel's Start Up Opposition Policy) process concerning the location of the dispute in the event of a challenge. This is known as 'Mutual Jurisdiction'.

"As the arbitrator failed to address the subject of Mutual Jurisdiction, even winning the court case in the UK could have left us in the position of possibly having to later defend the case all over again in the United States, which surely defeats the object of having such arbitration," Westley commented.

Faced with the prospect of fighting its corner in courts on both sides of the Atlantic, Internetters decided to strike a deal.

Domainregistry.com Inc. has agreed to relinquish any claims on domainregistry.biz to Internetters in exchange for $12,000.

Internetters is far from alone in contesting a NAF decision, or questioning its procedures.

Ottawa businessma Douglas Black recently won rights to the domain name canadian.biz against brewing giant Molson. Molson owns the trademark for the word Canadian, as it applies to beer, and this impressed Internet arbitrators - but not the Ontario Superior Court. Many firms have Canadian in their name and Judge Wright decided that Molson had no particular plans for canadian.biz, unlike Black who plans to use the domain as a meeting place for Canadian businessmen.

The Judge overturned the ruling of the arbitration panel and awarded Black costs.

Last year, Professor Michael Geist of the University of Ottawa conducted a study into allegations of systematic unfairness in the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP). The study found that NAF complainants win 82.9 per cent of the time. ®